Filewrapper®

Questions Remain for Venue Considerations Post TC Heartland

January 18, 2019

Post By Luke T. Mohrhauser

A recent decision in a patent infringement case involving John Deere suing both AGCO Corporation and its subsidiary, Precision Planting LLC, in the District
of Delaware illustrates that not all answers from the Supreme Court's 2017 decision of TC Heartland LLC v. Kraft Foods Grp. Brands LLC are
clear. The TC Heartland decision included, in part, that "A patent infringement case "may be brought in the judicial district where the defendant
resides, or where the defendant has committed acts of infringement and has a regular and established place of business." 28 U.S.C. § 1400(b). Under
§ 1400(b), a domestic corporation "resides" only in its state of incorporation.TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct.
1514, 1521 (2017).

In the Deere v. ACGO/Precision Planting case, AGCO and Precision Planting moved to transfer the case from Delaware to the Central District of Illinois.
While both AGCO and Precision Planting are incorporated in Delaware, Precision Planting is headquartered in Central Illinois, while AGCO is headquartered
in Duluth, Georgia. AGCO does own another subsidiary, GSI, which has three facilities in the Central District of Illinois, but otherwise does not have
its own locations in the District.

The court first noted that there was no question that Deere could have sued Precision Planting in Illinois, but held that there is a "real question" as
to if Deere could have sued AGCO in the Central District of Illinois. Based upon the TC Heartland decision, along with other statutes, the
court stated that AGCO "resides" only in Delaware, and would only transfer the case if there was no "real question" that AGCO has a "regular and established
place of business" in the Central District of Illinois.

The analysis of a "regular and established place of business" relied upon the case ofIn re Cray Inc., 871 F.3d 1355, 1362 (Fed. Cir. 2017). The
case states that there is no precise rule, but each case depends on its own facts. There are some statutory requirements, however. First, "[t]he statute
requires a 'place."'Id. "The second requirement ... is that the place 'must be a regular and established place of business."'Id. "[T]he
third requirement" is that the place must be "a place of the defendant." Id.at 1363 (emphasis in original).

In the Deere case, the issue at argument was whether GSI's locations in the Central District of Illinois, as a subsidiary owned by AGCO, constituted a
"place" of AGCO. Cray did not discuss this consideration, and the court stated that it was not aware of the Supreme Court nor the Federal
Circuit ruling on whether a defendant's subsidiary's "place of business" could be one that "the defendant has" for purposes of§ 1400(b). Therefore,
this would be a question of first impression, which the court considered to be a "real question" about whether Deere could have sued AGCO in the Central
District of Illinois. Accordingly, the motion to transfer was denied.

Therefore, while TC Heartland was instructive on where patent infringement lawsuits should be filed, there remains at least some questions, such
as, is it the location of the parent, subsidiary, incorporation, or dependent upon the specific facts of a case that ultimately decide the location.
These are important considerations to determine when deciding to file a lawsuit, and working with a Patent Attorney to get all of the information related
to all parties is key so that a party filing the suit files in the proper jurisdiction.

Latest Posts

June 01, 2020

May 25, 2020

May 19, 2020

Purpose

The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

Disclaimer

McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.